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COMPONENT PARTS OF A COMPLEX PRODUCT

COMPONENT PARTS OF A COMPLEX PRODUCT. 8 th Liaison Meeting on Designs Agenda Item 6 Presentation by the Latvian Patent Office. Legal background: Preconditions for component parts protection. Law on Designs (L V ) , Art. 4 ( 2 ) :

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COMPONENT PARTS OF A COMPLEX PRODUCT

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  1. COMPONENT PARTS OF A COMPLEX PRODUCT 8th Liaison Meeting on Designs Agenda Item 6 Presentation by the Latvian Patent Office

  2. Legal background: Preconditions for component parts protection Law on Designs (LV), Art. 4(2): A design that is applied to or incorporated in a product, which is a component part of a complex product (component) shall only be considered to be new and have individual character if such design conforms to the following conditions: 1) the part (component) that is incorporated in the complex product is visible during the normal use of the complex product, i.e., when used by the actual user (consumer). The technical maintenance and repair of a product shall not be considered the normal use; and 2) the visible features of the part (component) conform to the requirements of novelty and individual character. ≈Directive Art. 3(2) & (3) ≈ CDR Art. 4(2) & (3) 2

  3. Legal background:Grounds for ex-officio refusal Law on Designs, Art. 21(1): The Patent Office shall take a decision regarding the refusal to register a design if in the course of verification of the formal requirements of an application it becomes clear that the submitted design does not conform to the definition of a design (Art. 1, Clause 1) or, in accordance with Art. 9, Paragraph 1 of this Law, is not to be protected [= public order & morality] ≈ CDR Art. 47(1) ‘Design’ and ‘complex product’ definitions – Law on Designs, Art. 1, Clause 1 & 3 ≈ Directive Art. 1(a) & (c) ≈ CDR Art. 3(a) & (c) 3

  4. Competenceof the Office and of courts • Not within the competence of the LPO - to determine whether the part/component part applied for registration will enjoy legal protection • The compliance with the requirements for component parts protection can be examined only when challenging the validity of the registered design: • within the (post-registration) opposition procedure, before the Board of Appeal (≈the invalidity procedure in the OHIM) • within the invalidation action/counterclaim for invalidation, before the court • The Office is mainly dealing with the issue of component parts protection when consulting the applicants

  5. Shortage of the relevant case-law • No oppositionsdecided byour Board of Appeal, where the compliance with the requirements for component parts protection would be questioned • No information on relevant court decisions in LV • Only somewhat fragmentary opinions in literature, within the case-law of the OHIM and of the Member States • Difficult to find elaborated opinions even on thebasic notions; it seems that other issues of design protection have been more worked out • Even the OHIM has not substantiated, e.g. why the set of garbage containers arranged in a row (and perhaps clamped to each other?), is not a complex product: • “…the garbage containers do not constitute component parts of complex products in the meaning of Article 3(c) CDR… Article 4(2) CDR does not apply” [Invalidity Division Decision ICD 000004919] • Language barriers bother the use of the available case-law

  6. Visibility criterion &the main notions related to it • Under the Directive, CDR and LV Law on Designs: • Complex product means a product composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. • Component parts not expressly defined; have to be construed indirectly, through the definition of a ‘complex product’ &considering the specificpreconditionsof their protection. • Visibility criterion: its sense becomes apparent in the requirement that a component part must remain visible during ‘normal use’ of the complex product. • Normal use means use by the ‘end user’ (actual user or consumer, in LV law); maintenance, servicing and repair work are expressly excluded from normal use.

  7. Component parts visibility concept:stages of development - I • Visibility criterion was present in the very preliminary drafts for the Directive and CDR,however in a broad & general sense: • ’design’ shall mean the.. features of the appearance of the product, which are capable of being perceived by the human senses as regards form and/or colour…[Green Paper, 1991] • COM at that time explained: • …internal mechanisms invisible to the eye or processes taking place inside a product during its use… are irrelevant for the appearance of the product… they should not be protected as designs. • …difficult question… whether each of the components, insofar as it belongs to the visible part of the complex product, may be protected as a Community design. • …if the component can be considered as a product as such, having its own market, even if it be for a limited circle of specialists who deal with the assembling or repair of the complex product, this component should be treated as a product in itself and its appearance consequently protectable.

  8. Component parts visibility concept:stages of development - II • In the 1993 Proposals for the Directive and CDR, the visibility criterion for components cannot be found. • There was a notion of a ‘part of a complex item’ which as such, to be protected, should be new and withindividualcharacter[Proposed CDR, Art. 4(b)]. • At that time COM explained: • Components or elements intended to be assembled in a larger complex product can each be protected as a product provided they can be marketed separately and their designs comply with the requirements for protection.

  9. Component parts visibility concept:stages of development - III • Visibility criterion was further developed in 1996. In addition to the general statement that ‘design’ means the outwardly visible appearance of the whole or a part of a product… [Amended Proposal for the Directive, Art. 1(a)], a new condition was introduced: • …protection should not be extended to those component parts which are not visible during normal use of the product, or to those features of such part which are invisible when the part is mounted… [Recital 12a] • At this stage COM clarified: • To comply with the amendments made by the European Parliament, an extra requirement relating to the protection of parts has been added… The amendment is especially relevant to the automotive-industry, where it means that certain spare parts, the so-called ‘under-the-bonnet’ parts, are excluded from protection. • Dr. Annette Kur: • The exclusion of non-visible features of parts from design protection has been criticized in the literature as deviating from the overall concept underlying the Directive.

  10. Some comments on the main notions:Complex product - I • COM comments: • Costly, long-lasting, complex products such as motor vehicles[1993] • ...thereare a numberofcaseswhichconstitute a greyzone… For instance a kitchen designed by using a number of elements... combined together to form a pleasant, new and unitary setcould be considered both as an example of interior decoration or as a complex product. It seems… thatprotection… insuchcasesshouldbepossible[Green Paper, 1991] • DavidMusker: • The term… is surely intended to cover cars, and other motor vehicles, although replacement of a minor spare might not most aptly be described as ‘disassembly and reassembly’ of the car but rather as repair. It may, however, go far broader than cars. • Prof. L. Bently, prof. B. Sherman: • Quitewhattheterm ‘complexproduct’ coversbeyondthis[= beyondmotorvehicles]is less clear. Manyproductsaremadeupof a numberofpartswhichcanbedisassembledandreassembled…

  11. Some comments on the main notions:Complex product - II • UK Office in 2003 proposed a ‘complex product’ definition, supposingly “more practical and appropriate”: • A product containing a multiplicity, or such a number of, components that it becomes technically complex, and one for which some of the components will need maintenance, servicing or repair during the life of the complex product. This will usually be a product with mechanical/electrical/electronic features such as a motor car. • ? – No good reasons, why, e.g. a modern flat (any living space), its parts or systems used in it (kitchen / bath-room equipment, etc.), and the like – cannot be considered ‘complex products’, if they, indeed: • are composed of multiple components, • can be disassembled and re-assembled, • are ‘technically complex’, and posess mechanical / electrical / electronic features, • need maintenance & repair, etc.

  12. Some comments on the main notions:Component part - I • COM comments in 1996: • …a separable part… which is usually also a product in its own right. • ...the interior compartments of a suitcase... do not constitute component parts… • Uma Suthersanen, Ph.D: • Presumably, the notion ‘assembly’ includes both industrial or manual assembly processes. How closely integrated must the components of a complex product be? • …not immediately clear why a suitcase will not constitute a complex product, of which the interior compartments (which are capable of wear and tear and may need replacement) are component products… This vital aspect of the registrability criteria has been poorly conceived…

  13. Some comments on the main notions:Component part - II • UK Office in 2003: • …a separate, removable part rather than just the inside surface of a product. • ...the objection will not be raised against a product which may be invisible in use but which is not a component part of a complex product – e.g. a nail or screw which may not be visible in a wall. • Consumable items such as staples for a staple gun, spark plugs for a vehicle engine, or arguably containers for consumable items such as toner for a printer/photocopier or ink for a pen... Each is clearly replaceable, separate, and removable and they are clearly used in products which may be described as complex, but are they actually component parts?A better question would be “is it a complete product” without the item in question? A staple gun is still a staple gun, with or without a supply of staples… • In general, consumable items which are used (and used up) in complex products will not be considered as ‘component parts’ of those products.

  14. Some comments on the main notions:Component part - III • Uma Suthersanen, Ph.D: • …protection can be claimed for the photocopying machine as a whole…, or it can be claimed for the toner cartridge… The cartridge, being a component part, would have to be visible during normal use. • Prof. L. Bently, prof. B. Sherman: • The Design Registry’s definition [of a component part]… is difficult to support. To say that a part is only a component if, absent the part, the item would not be seen as a complete product raises the question as to when an item would be seen as a complete product: is a car a complete product without its hubcaps, tyres, wing-mirrors, fenders, seats, fan-belt, or spark-plug?

  15. Some comments on the main notions:Visibility during normal use - I • COM explanationin 1996: • ...this requirement should not be understood to mean that parts must be visible at all the times during normal use. In the case of a car, normal use can also mean that someone sits in the back of the car, or walks around it. The wording does, however, exclude from protection those parts whose design does not normally play a role for the consumer because it is only visible during repair or maintenance. • DavidMusker: • …even an attractive component, perhaps visible at point of purchase, can be denied protection if invisible in ‘normal’ use. The issue is apparently not whether the article is bought for its appearance, but whether it is used for its appearance. • Prof. L. Bently, prof. B. Sherman: • …normalusewouldincludegettingintoandoutof a vehicle, puttingthingsintheboot, aswellasdrivingorbeingthepassenger.

  16. Some comments on the main notions:Visibility during normal use - II • Dr. Ulrike Koschtial: • ... it is not clear what ‘visible’ means. Does it mean visible to the naked eye, or with a microscope or lamp? …it can be presumed that a design that can only be seen with the help of technical instruments will not be of justifiable interest to a producer as the outward design of a product, and cannot thus be covered by the term ‘visible’... Correctly interpreted ‘visible’ means ‘visible to the average observer with ordinary effort’. • This… seems too restrictive in cases where the decision to purchase… is based on the attractive design of a product before its integration into a more complex product. Given the market approach preferred in the rest of the Design Regulation, it would have been more consistent to choose the moment of sale to determine visibility of the product. A producer has the same interest in protection of his product configuration at the moment of sale as at the moment of its visibility after integration into a complex product.

  17. Some comments on the main notions:Visibility during normal use - III • UK Office in 2003: • Normal use is use by the ‘end user’ of the complex product: i.e. for a motor car, the owner or the driver rather than a service mechanic. Normal use would therefore include the primary purpose of driving the car along with all the other uses to which the car is put by the owner/driver. As cars are often seen as status symbols this includes being seen in the car and displaying the car when it is parked. • It may be… that a particular component part is actually intended to be fitted into a complex product in which it would remain visible – e.g. in a motorbike or lawnmover engine rather than a motor car. • ? – No good reasons, why, e.g. the outer appearance of technical units placed under the car bonnet (engine, air filter, radiator, etc.), which may be well visible by drivers themselves, during simple service operations (refill of liquids, replacement of consumable items), cannot be protected, if, at the same time: • the consumable items perhaps can be protected as such; • substantial innovations & creativity are often invested when designing the outer appearance of these units; • the same or very similar technical units can be mounted / integrated in • a way they remain visible (e.g. on a motorbike or under a transparent cover) -?

  18. Examplesfrom practice - I D 15 261 Handle for bicycle handle-bars D 10 336 Toner cartridge

  19. Examplesfrom practice - II D 15 040; 15 041; 15 042 Inhalation apparatus and its parts u D 10 387 Fencing from plastics

  20. Examples from practice - III D 15 197 Components of gearshift mechanism D 10 651; 10 652 Rollerdeviceforcorrectingtape Tapecartridge [Transparentcoverleavescartridgevisibleinuse]

  21. Examples from practice - IV D 15 258 Propellerbladeforship • Obviously a component part of a complex product • Perhaps not only functional • However, not visible during normal use D 15 091 Cutter blade for agricultural machine

  22. Some conclusions • The particular issues of component parts protection seem to be less elaborated than others. • Still many questions, even speaking about the basic notions. • Applicants have to act at their own risk when they are registering parts of products. • We are quite far from unified understanding of the relevant norms. (Even nottouching the most contradictory problem of spare parts protection!) • Evident necessity to continue the compilation of the relevant case-law, from all accessible institutions & sources. • Desirable to translate, at least the most interesting texts, into the most commonly used languages. • Hard to imagine better fora for discussion on these issues, than the European Judges Symposia and the Liaison Meetings on Designs.

  23. Sources • EU legislation preparatory work: • Green Paper on the Legal Protection of Industrial Design: III/F/5131/91-EN, June 1991. • Proposals for CDR and the Directive: COM(93) 342 & 344 final, 03.12.1993. • Amended proposal for the Directive: COM(96) 66 final, 21.02.1996. • Amended proposal for the CDR: COM(1999) 310 final, 21.06.1999. • Books and articles: • Uma Suthersanen, Design Law in Europe; London, Sweet & Maxwell, 2000. • David Musker, Community Design Law Principles and Practice; London, Sweet & Maxwell, 2002. • Ulrike Koschtial, Design Law: Individual Character, Visibility and Functionality; in: International Review of Intellectual property and Competition Law (IIC), 3/2005. • Lionel Bently and Brad Sherman, Intellectual Property Law; Third Edition [2009], Oxford University Press. • UK Office Designs Practice Notice 1/03 [07.01.2003]: http://www.ipo.gov.uk/d-dpn-103.htm.

  24. Latvian Patent Office Thank you for your attention Visit the Design Database at the LPO website www.LRPV.lv

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